Oscar 2015: Academy to Test Prestige Value

Hollywood Reporter Survey:

On August 4, the Acaemy of Motion Picture Arts and Sciences (AMPAS) will test its prestige in a California courtroom.

The high-stakes trial will be one of the biggest ever on the issue of cybersquatting, and domain registrar giant GoDaddy will be defending a program that allowed customers to buy domains like 2011oscars.com or betacademyawards.com, “park” that page and collect a portion of revenue from GoDaddy’s advertising partners on a pay-per-click basis.

On Tuesday, the parties outlined the issues in a five-year-old case and detailed the many witnesses who will be testifying on everything from the history of the Oscars ceremony to the policies of GoDaddy, a $4.5 billion company that went public in April.

AMPAS has already prevailed in court in showing that most of the 293 domains that GoDaddy allowed to be registered are confusingly similar to its own marks like “Oscar” and “Academy Award.” The judge has rejected safe harbor for GoDaddy, which has abandoned all but one of its defenses to the cybersquatting lawsuit.

But the plaintiff still needs to show that 57 of the domains are confusingly similar and rebut GoDaddy’s last remaining defense that there was no bad faith intent to profit from the trademarks.  The issue of statutory damages will be anywhere from $1,000 to $100,000 for each domain name at issue.

GoDaddy asserts that it made less than $350 in advertising revenue from the 293 domains and says that AMPAS lacks evidence to demonstrate quantifiable harm. The defendant also continues to question the extent to which the defendants’ marks are distinctive and famous, saying it will introduce testimonial evidence regarding the myriad definitions and meanings of the term “oscar.”

At the trial, which will happen before U.S. District Judge André Birotte Jr and no jury, AMPAS will show the value of the film industry’s most important awards ceremony. Former top execs including ex-executive director Bruce Davis and ex-COO Ric Robertson are anticipated to testify about the history and work of the Academy and its organizational structure. Christina Kounelias, currently the chief marketing officer at the Academy, may be called as a witness to talk about the extensive efforts to promote the annual awards ceremony. The witness list also includes assistant general counsel Scott Miller to discuss generally about the Academy’s intellectual property policies and enforcement efforts, which could be fascinating given its storied history of policing, from times it went to court to sue over fake and real statuettes for sale to instances it cracked down on travel packages to its annual event.

But showing its own esteem is only one part of the equation as AMPAS looks to direct the judge to GoDaddy’s own behavior.

AMPAS says it will introduce evidence that GoDaddy generated at least $100 million since 2006 from its Parked Pages Program, that the defendant knew it had a problem with trademarks but chose to monetize them, that it was long capable of implementing filters and that the program was intended to divert people from the official Oscars.org and Oscar.com web sites. Other evidence that could be introduced include agreements and discussions with Google, complaints from other trademark owners and how GoDaddy directly registered or acquired certain domain names that infringe on AMPAS’s marks.

The plaintiff aims for maximum statutory damages — again, totaling nearly $30 million — to deter a company that made more than a billion dollars in revenue last year. In turn, GoDaddy says it has responded to complaints from trademark owners and implemented a filter in 2013. It warns the judge about expanding the scope of cybersquatting liability.

The case has been unusual from from efforts to depose GoDaddy founder Bob Parsons, the defendant’s accusations that AMPAS was gaming the judicial process, and disclosures of AMPAS settlement offers, including $20 million in 201 and $6 million in 2013.